Assurant, Inc. v.
Claim Number: FA0709001081289
PARTIES
Complainant is Assurant, Inc. (“Complainant”), represented by Brian
M. Davis, of Alston & Bird, LLP, Bank of America
Plaza,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <assurantssolutions.com>, registered
with Compana,
LLC.
PANEL
The undersigned certifies that she has acted independently and impartially
and to the best of her knowledge has no known conflict in serving as Panelist
in this proceeding.
Sandra J. Franklin as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on
On October 11, 2007, Compana, LLC confirmed by e-mail to the
National Arbitration Forum that the <assurantssolutions.com> domain name
is registered with Compana, LLC and that
the Respondent is the current registrant of the name. Compana, LLC
has verified that Respondent is bound by the Compana,
LLC registration agreement and has thereby agreed to resolve domain-name
disputes brought by third parties in accordance with ICANN’s Uniform Domain
Name Dispute Resolution Policy (the “Policy”).
On October 17, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of November 6, 2007 by which
Respondent could file a Response to the Complaint, was transmitted to Respondent
via e-mail, post and fax, to all entities and persons listed on Respondent’s
registration as technical, administrative and billing contacts, and to
postmaster@assurantssolutions.com by
e-mail.
A timely Response was received and determined to be complete on
A timely and complete Additional Submission was submitted by
Complainant on
On
A timely Additional Submission was submitted by
Respondent on
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following assertions:
1. Respondent’s <assurantssolutions.com> domain name is confusingly similar to Complainant’s ASSURANT and ASSURANT SOLUTIONS marks.
2. Respondent does not have any rights or legitimate interests in the <assurantssolutions.com> domain name.
3. Respondent registered and used the <assurantssolutions.com> domain name in bad faith.
B. Respondent states:
1. Respondent does not deny that the <assurantssolutions.com> domain name is confusingly similar to Complainant’s marks.
2. Respondent offers a legitimate business of targeted advertising searches under the <assurantssolutions.com> domain name.
3. The <assurantssolutions.com> domain name is descriptive or generic, and therefore Respondent did not register or use the <assurantssolutions.com> domain name in bad faith.
C. In its Additional Submission, Complainant
notes that the U.S. Patent and Trademark Office has issued more than 10
registrations for Complainant’s family of ASSURANT marks, demonstrating that
the marks are not descriptive or generic.
D. In
its Additional Submission, Respondent objects to Complainant’s Additional
Submission, arguing that the National Arbitration Forum’s Supplemental Rule 7
allowing such Additional Submissions, is beyond the
scope of the UDRP.
PROCEDURAL MATTER
The Panel will consider the Additional Submission filed by Complainant,
and the Additional Submission filed by Respondent, as both comported with the
National Arbitration Forum’s Supplemental Rule 7. The Parties, as well as the Panel, are bound
by the published rules of the National Arbitration Forum unless and until the
National Arbitration Forum is persuaded to amend its Rules, via the appropriate
vehicle, not within a pending UDRP case.
FINDINGS
Complainant owns several registrations for
the ASSURANT mark worldwide, including U.S. Service Mark Registration No.
2,543,367, issued
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a
complaint on the basis of the statements and documents submitted in accordance
with the Policy, these Rules and any rules and principles of law that it deems
applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove
each of the following three elements to obtain an order that a domain name
should be cancelled or transferred:
(1) the domain name registered by the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the Respondent has no rights or legitimate
interests in respect of the domain name; and
(3) the domain name has been registered and is being
used in bad faith.
Complainant has sufficiently established
its rights in the ASSURANT mark through registration with the USPTO pursuant to
Policy ¶ 4(a)(i).
See Innomed Techs., Inc. v. DRP Servs.,
FA 221171 (Nat. Arb. Forum
The Panel concludes that
Complainant has satisfied Policy ¶ 4(a)(i).
Respondent notes that Complainant, under its
section heading “Respondent Has No Rights Or Legitimate
Interests In The Accused Domain Name,” makes a scant reference to
Respondent’s lack of rights. However,
the Panel notes that Complainant sets forth elsewhere in its Complaint that
Respondent is using the <assurantssolutions.com>
domain name illegitimately, purporting to provide “resources and information on
Assurant and Assurant Solution[s]” and includes links to various third party insurance
company websites. Complainant also
points out that Respondent has a history of registering domain names containing
trademarks owned by others.
The Panel finds that Complainant
has established a prima facie case
and that the burden is thus shifted to Respondent to show that it does have
rights or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA
118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission
constitutes a prima facie case under the Policy, the burden effectively
shifts to Respondent.”); see also Do
The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding
that once the complainant asserts that the respondent has no rights or
legitimate interests with respect to the domain, the burden shifts to the
respondent to provide “concrete evidence that it has rights to or legitimate
interests in the domain name at issue”).
In making its case, Respondent relies on its argument that the words
“assurant solutions” are somehow descriptive or generic, likening them to the
words “confident solutions.” The Panel
finds, as the U.S. Patent and Trademark Office has done, that the words
“assurant solutions” are not generic or descriptive, and that they are not in
common usage together in the English language.
See
Respondent’s <assurantssolutions.com> domain name contains
Complainant’s ASSURANT mark in its entirety and resolves to a website that
lists various links to third-parties, many of whom offer services in
competition with Complainant. The Panel
finds this to be neither a bona fide offering
of goods or services pursuant to Policy ¶ 4(c)(i) nor
a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See eBay
Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the
respondent’s use of the complainant’s entire mark in domain names makes it
difficult to infer a legitimate use); see
also TM Acquisition Corp. v. Sign
Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the
respondent’s diversionary use of the complainant’s marks to send Internet users
to a website which displayed a series of links, some of which linked to the
complainant’s competitors, was not a bona fide offering of goods or
services); see also Disney Enters., Inc. v. Dot Stop,
FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s
diversionary use of the complainant’s mark to attract Internet users to its own
website, which contained a series of hyperlinks to unrelated websites, was
neither a bona fide offering of goods or services nor a legitimate
noncommercial or fair use of the disputed domain names).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
First, the Panel notes that in multiple previous UDRP decisions, this
same Respondent has registered a common typographical error relating to a third
party’s mark and that such typosquatting by itself is generally considered
evidence of bad faith use and registration of a domain name. See,
for example, Sky Hawke Techs., LLC v. Tex. Int’l Prop. Assocs., FA 977213 (Nat. Arb. Forum
Respondent’s disputed domain name
resolves to a website offering links to third-party, commercial websites that
offer products and services that compete with Complainant’s business. The Panel finds that such use amounts to a
disruption of Complainant’s business, further evidence of registration and use
in bad faith pursuant to Policy ¶ 4(b)(iii). See EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb.
Forum
Presumably, Respondent enjoys financial benefit from its diversionary use of the disputed domain name. The Panel finds that such use amounts to an attraction for commercial gain, evincing registration and use in bad faith pursuant to Policy ¶ 4(b)(iv). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
The Panel
finds that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <assurantssolutions.com> domain name
be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: November 26, 2007
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